July 2020 In the context of a referral from the tribunal de l’entreprise de Liège in Belgium, in its latest judgment the CJEU considered the question of whether copyright exists in technical designs.
Background
Back in 2017, Brompton Bicycle Ltd (‘Brompton’), who manufacture the famous Brompton bicycle which adopts three different positions and thus can be folded away when not in use, brought an action before the tribunal de l’entreprise de Liège in Belgium seeking a ruling that Get2Get’s bicycles infringe their copyright.
By way of defence, Get2Get argued that the appearance of the Brompton bicycles is dictated by the technical solution sought (i.e. the shape of the bicycles ensures that the bicycle can adopt the three positions and thus fold away) and as such can only be protected under patent law, not copyright law.
It is pertinent to mention here that the Brompton bicycle was previously protected by a patent which has now expired.
Brompton countered, arguing that the three positions adopted by the Brompton bicycle can be obtained using alternative shapes to those used by the creator of the Brompton bicycle, which necessarily means the bicycle is protected under copyright law.
When the case was heard before the tribunal de l’entreprise de Liège, the Court considered it necessary to refer the following two questions to the CJEU:
(1) Must EU law, in particular Directive [2001/29], which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?
(2) In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:
- The existence of other possible shapes which allow the same technical result to be achieved?
- The effectiveness of the shape in achieving that result?
- The intention of the alleged infringer to achieve that result?
- The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’
In a succinct 39 paragraph ruling , the CJEU held that “Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality , which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.”
In arriving at this decision, the CJEU started by reviewing the object of copyright protection, namely to protect authors against the reproduction, communication to the public and distribution to the public of their works without their authorisation.
The obvious next question for the CJEU was thus whether shapes which are, at least in part, dictated by technical considerations are ‘works’.
In order to class as a ‘work’, two conditions must be met: first, the work must be original i.e. it must reflect the personality of its author, as an expression of his free and creative choices and second, the work must be expressed i.e. not a mere idea.
Originality
The CJEU held that subject matter may be eligible for copyright protection, even if its realisation has been dictated by technical considerations.
The salient point is this: have the technical considerations prevented the author from reflecting his personality in the subject matter. Put another way, have the technical considerations prevented creative freedom. If not, then the work is eligible for copyright protection. If they have then the work is not eligible for copyright protection.
In reaching their conclusion the CJEU explicitly rejected the idea that the existence of other possible shapes which allow the same technical result to be achieved is decisive as to whether copyright subsists in a work.
The Court also rejected any notion that the intention of the alleged infringer is relevant.
With regards to (i) the existence of an earlier, now expired, patent and (ii) the effectiveness of the shape in achieving the same technical result, the CJEU held that they should be taken into account only insofar as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.
Expression
This CJEU found no issues with accepting that this condition was met.
Conclusion
With the above guidance in place, the case will now go back to the Belgian Court to decide whether the shape of the Brompton bike is an expression of the creator’s personality and free and creative choices or whether, as Get2Get argue, the shape is solely dictated by technical function.
Although we await with interest the decision of the Belgian court, perhaps more interesting to UK readers will be how the UK courts interpret the decision in future cases and whether the decision will have any impact on Section 51 of the Copyright, Designs & Patents Act 1988 which provides that it is not copyright infringement to make an article to a design, or to copy an article made to a design, when the design document records a design for anything other than an artistic work or a typeface.
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